Reyes Fenig Asociados – Intellectual Propertyhttps://reyesfenigeng.wordpress.com
Intellectual Property Law in MexicoMon, 18 Dec 2017 12:18:50 +0000enhourly1http://wordpress.com/https://s2.wp.com/i/buttonw-com.pngReyes Fenig Asociados – Intellectual Propertyhttps://reyesfenigeng.wordpress.com
What happens with IP in Mexico if NAFTA dieshttps://reyesfenigeng.wordpress.com/2017/12/04/if-nafta-dies/
https://reyesfenigeng.wordpress.com/2017/12/04/if-nafta-dies/#respondMon, 04 Dec 2017 13:42:48 +0000http://reyesfenigeng.wordpress.com/?p=601]]>The first round of negotiations regarding the North American Free Trade Agreement (NAFTA) between Canada, Mexico and the United States started on August 16, 2017. The discussions are not over yet; the next round (the sixth) is scheduled to start on December 11, 2017, and it is unclear if the parties will reach an acceptable agreement.

I can remember the huge optimism around free market and trade liberalization when I was at Law School in the mid-nineties. The triumph of economic and political liberalism in most of the world seemed secured.

However, security concerns, inequality, distrust in the traditional political elites and fear of “others”, have caused some countries to take steps in unexpected directions. I do not see a revolutionary change, but we are seeing scenarios that were unthinkable five years ago.

One victim of the change og the tide has been NAFTA.

Readers should know that the implications of NAFTA in Mexico were huge, far beyond trade. For Mexicans, it was assuming a different role in the world. Needless to say, NAFTA deepened an already fundamental relation between Mexico and the US (the relation with Canada is important, but far from the relevance of the relation with the United States). As the well-known Mexican historian Lorenzo Mayer explains:

NAFTA was one of the most important symbolic moments in the Mexico-US relations since the formal alliance between the two countries in World War II. The agreement highlighted the failure of the development model known as Mexican economic nationalism, became a personal triumph for President Carlos Salinas and a collective triumph for the then ruling group in Mexico. After NAFTA, the state policies that were in place in Mexico, from the Mexican Revolution to the policy toward Central America in the eighties, were forgotten. Instead, Mexico adopted an administrative policy that may be called a new “special relationship” with the only Superpower of the end of the 20th Century[1].

NAFTA had profound effects in the regulation of IP rights in Mexico. Large parts of the Mexican statutes regarding trademarks, patents, vegetal varieties and copyright were direct consequence of NAFTA. Now that that the survival of NAFTA is compromised, one may ask if the end of the trade agreement would impact the Mexican IP legislation.

Making predictions is a risky activity, but I think I can make a few reasonable guesses:

The United States, Canada and Mexico will continue being neighbors and trade will continue. In spite of the alleged efforts to diversify the destiny of exports, Mexico will continue highly dependent of trade with the United States and the relation will continue being highly asymmetric.

Economies in the three NAFTA nations will suffer; less in the United States and Canada than in Mexico, especially due decreased growth and investment rates in our country. Of course, there also will be winners.

Trade rules will change, but not too much. Mexico, the United States and Canada are still members of the World Trade Organization (WTO) and its rules would apply. The advantages of NAFTA would be gone, but Mexico is not going back to protectionism and import substitution industrialization policies.

It is unlikely that the end of NAFTA will cause a setback in the current protection of IP rights in Mexico. Even without NAFTA, our country would still be a party of many bilateral and multilateral agreements (notably, the Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPS) that bind Mexico to keep the current legislation.

On the other hand, without NAFTA, Mexico will have little incentives to enhance the protection of IP rights, mainly in the field of technological innovation, where our northern neighbor enjoy a dominant position. I can think about a few examples of “not-happenings” if NAFTA ends: a) extending the term of patents due unjustified delay in examination or in issuance of marketing authorizations; b) providing a better regulation to the “non-reliance” aspect of efficacy and security data for new chemical entities to be used in pharmaceuticals and agrichemicals[2]; c) providing a minimum exclusivity term for sad data[3]; d) extending the patentability of certain developments that today are not even considered inventions, and; e) providing some sort of provisional protection procedures for inventions that are subject matter of published pending patent applications.

We do not know what the future of NAFTA will be; last October, some pessimistic estimates calculated that that the chances of survival of NAFTA were less than 50%[4]. If negotiations are not succesful and NAFTA ends, it would certainly not be the end of the world but, whatever the outcome may be, Mexicans should think again what kind of relation we want with our North American neighbors and the rest of the world.

[2] Data protection regarding safety and efficacy of new chemical entities for medicines and agrochemicals have tow aspects: non-disclosure and non-reliance. Only non-disclosure is properly covered by the statute and regulations, while non-reliance enjoys a weak protection, limited to pharmaceuticals, from an administrative internal guideline of the Mexican FDA. Such guideline may be easily suspended or terminated at any time.

[3] TRIPS does not provide a minimum term for data exclusivity. NAFTA states a minimum five years term, the same that the internal guideline of the Mexican FDA, although the guideline is applicable to pharmaceuticals only. The end of NAFTA will leave the term of data exclusivity in a weaker situation.

]]>https://reyesfenigeng.wordpress.com/2017/12/04/if-nafta-dies/feed/0Arturo D. ReyesThe Mexican Patent and Trademark Office against the “Netfllix of Sports”.https://reyesfenigeng.wordpress.com/2017/09/29/sportflix/
https://reyesfenigeng.wordpress.com/2017/09/29/sportflix/#respondFri, 29 Sep 2017 22:07:16 +0000http://reyesfenigeng.wordpress.com/?p=569]]>A few weeks ago, newspapers in Mexico City informed about an administrative infringement action with the Mexican Patent and Trademark Office (MPTO) against the person in charge of the website sportflix.net[1]. The MPTO confirmed the news through a press release dated August 30, 2017[2].

Sportflix claimed to be a Mexican Internet platform that, by means of a subscription, offers streaming services of sport events broadcasted by companies such as ESPN, Foxsports, Televisa and TV Azteca, among others. Actually, Mexican press often identified Sportflix as the “Netflix of sports”[3]. When questioned about licenses and authorizations to stream other’s transmissions, the alleged VicePresident of Sportflix said that their activities would not harm the exclusivity rights of the broadcasters because Sportflix is a streaming service, not a TV broadcaster[4].

Sportflix.net was scheduled to start streaming on August 30, 2017, but no content seems available yet. The site states that it still welcomes subscribers.

The WHOIS information available on September 28, 2017, states that sportflix.net belongs to someone identified as “Ninja Mortal” (I guess translation is not necessary) addresses at Patzcuaro, state of Guerrero, Mexico[5] (Patzcuaro is actually at the state of Michoacán, not Guerrero). SPORTFLIX is a registered Trademark in Mexico for services in International Classes 38 and 41, with registration numbers 1,758,031, 1758,032, 1,758,033 y 1,745,868 (issued in 2016) in the name of Matías Jacobo Said.

The press release of the MPTO states that there are, at least, two infringement actions: one related to trademark infringement and probably unfair competition; and the other associated to copyright infringement (the MPTO has jurisdiction on copyright infringement cases when related with trade). The MPTO did not explain exactly what causes of infringement were involved in the infringement actions against the streaming platform. The MPTO also enforced preliminary measures on the person/entity in charge of sportflix.net.

I am sure the sportflix.net case is full of interesting substantive issues and questions. However, right now, I am interested in only one aspect of the case: the MPTO filed the infringement action ex officio. When the MPTO starts an infringement action ex officio, one official of the MPTO prepares and files the action as plaintiff, while other official of the MPTO (not necessarily of higher rank) manages the procedure and renders a decision. Of course, there is no way to avoid a bias when the case, filed by one official of the MPTO, is to be solved by the guy sitting just two desks away.

There is no question that the MPTO has authority to file infringement actions ex officio and decide them. Sections 79, 155 and 188 of the Industrial Property Law authorize the MPTO to prepare, file and decide infringement, invalidation and cancellation actions. Actually, section 188 of the Industrial Property Law was amended on June, 2010, to encourage the MPTO to filed and decide infringement cases ex officio.

The fact that the MPTO may be more proactive in filing ex officio actions is positive in general. However I think the MPTO has to be careful about the justification to file an action ex officio.

All actions taken by the MPTO, especially if they involve starting ex officio a procedure against an individual or entity, must have as ultimate motivation the defense of public order or common good.

Preparing and starting ex officio an infringement action demands the use of the MPTO’s human and material resources and spending taxpayers’ money that will not be used in other tasks. Therefore, I believe the infringement procedure has to be aimed to cause a direct, clear, identifiable and specific benefit for the community in order to justify filing it ex officio. Infringement of the law and defense of legitimate private trademark rights is just not enough. Further, in the case of sportflix.net, the MPTO enforced preliminary measures, thus the MPTO is liable for the damages an losses that the preliminary measure may cause on the defendant, in the unlikely case that the MPTO decides there was no infringement. If the MPTO has to pay an indemnification, it will be with taxpayer’s money.

Again, it is good that the MPTO shows more willingness to start infringement actions ex officio. Neverthless, I am sure that Mountrigi Management Group Ltd. (owner of the Televisa trademark), TV Azteca, S.A. de C.V., Twentieth Century Fox Film Corporation, ESPN Inc., Turner Network Television, Inc. and Univision Communications Inc. have enough resources and know-how to strongly defend their trademarks and broadcasting rights in their own. Why then spending taxpayers money in defending them in an ex officio infringement action?

Without a proper and thorough justification about the higher good it pursues with the exofficio infringement action, the effectiveness of such procedures may be affected and the MPTO risks been seen as a government agency serving a few powerful interests instead of pursuing the common good. That would not be good for the MPTO, for the tradematk owners and for the IP system in general.

]]>https://reyesfenigeng.wordpress.com/2017/09/29/sportflix/feed/0Arturo D. ReyesA court opens the door to the Doctrine of Equivalents in Mexicohttps://reyesfenigeng.wordpress.com/2017/05/16/doctrine-equivalents-mexico/
https://reyesfenigeng.wordpress.com/2017/05/16/doctrine-equivalents-mexico/#respondTue, 16 May 2017 22:15:46 +0000http://reyesfenigeng.wordpress.com/?p=558]]>The main way to fight patent infringement is filing an infringement action with the Mexican Patent and Trademark Office (MPTO). The Mexican industrial Property Law provides a list of causes of infringement. The list is supposed to be limitative, and for many years, the prevailing opinion among Mexican practitioners has been that declaring a patent infringement demands the literal infringement of the claims.

On November, 2016, the Weekly Journal of the Federal Judicial Branch published a non-binding decision by one of the panels of the Court of Appeals of the First Circuit, in Mexico City, regarding patent infringement.

Essentially, the court stated that there is patent infringement if the infringer, instead if using the invention according to the literal claims, obtained the same result by equivalent means, without involving an inventive step[1].

This is an important breakthrough in Mexican patent law. In a more general view, this is one of a significant number of relatively recent non-binding precedents from courts of appeals in Mexico City and the Specialized Panel in Intellectual Property of the Federal Court of Administrative Affairs (FCAA) that seek to improve the protection of IP rights in Mexico by means of a more liberal construction of the statutory causes of administrative infringement (punishable by the Mexican Patent and Trademark Office) provided in the Mexican Industrial Property Law.

This tendency of the FCAA and some courts of appeals in Mexico City was somehow announced by a non-binding precedent of 2013. In this precedent, the Eight Court of Appeals in Mexico City stated that the general provision against unfair competition provided by Section 213, paragraph I, of the Industrial Property Law may be considered as a last resource remedy that allows punishing actions that, in spite of harming IP rights, are not literally stated as administrative infringement in the Industrial Property Law.

For example, the Industrial Property Law does not state as a cause of infringement importing goods identified with trademarks identical or confusingly similar to one registered in Mexico to identify the same of similar products to the ones stated in the Mexican trademark registration. In order to cure that void, the FCAA ruled in a non-binding precedent published on August, 2015[2], that such an activity should be punished as unfair competition under the Industrial Property Law and the general provision against unfair competition (Section 213, paragraph I, of the Industrial Property Law[3]).

More recently, on March 2017, the First Court of Appeals in Mexico City published in a non-binding precedent[4] stating that importing a product using a registered industrial design may be punishable as administrative infringement under the general provision against unfair competition (again, Section 213, paragraph I, of the Industrial Property Law), in spite of the fact that importing goods that use registered industrial designs without authorization is not stated as an infringement in the Industrial Property Law.

Although the above-stated precedents are not binding, they are considered authoritative, so I expect that the Mexican Patent and Trademark Office and the FCAA will show a more favorable and flexible approach to infringement cases in the benefit of IP owners in the following months.

However, the liberal construction of the statutory causes of infringement provided in the Industrial Property Law has not been free of criticism. One important objection relates to a binding precedent from the Supreme Court[5] regarding the basic principles applicable to administrative infringements.

The Supreme Court ruled that some principles ruling criminal law are applicable to administrative infringements cases, namely, the principle about the definition of the offense or “tipicidad”: in order to make an action punishable, such action must be exactly stated as an offense in the statute. An action can’t be punishable using analogy or higher reason.

If the MPTO and the courts must construct the statutory causes of administrative infringement as narrowly as criminal offenses, I wonder if the flexible constructions of the general provision against unfair competition stated in paragraph I of Section 213 of the Industrial Property Law would meet the standard set by the Supreme Court.

[3] Section 213.- “It is an administrative infringement: I. Taking any action against the good uses and customs in industry, trade and services that imply unfair competition and related with the subject matter regulated by this Act”.

]]>https://reyesfenigeng.wordpress.com/2017/05/16/doctrine-equivalents-mexico/feed/0Arturo D. ReyesNew binding ruling benefits owners of trademarks registered in Mexico that claimed date of first use.https://reyesfenigeng.wordpress.com/2016/09/29/new-binding-ruling/
https://reyesfenigeng.wordpress.com/2016/09/29/new-binding-ruling/#respondFri, 30 Sep 2016 03:38:04 +0000http://reyesfenigeng.wordpress.com/?p=543]]>The Mexican trademark system follows the first-to-file rule. However, use of a trademark in Mexico prior to the application may be relevant. Trademark applicants are allowed to claim a date of first use in Mexico.

As a rule, a trademark registration is not enforceable against a third party that started using, in Mexico and in bona fide, a trademark identical or confusingly similar to the registered one, to identify the same or similar products or services, if such use started before the filing date in Mexico. Claiming a date of first use in the application creates an exception to the rule.

Further, as a rule, Mexican registered trademarks may be invalidated on grounds of earlier and continuous use, in Mexico or abroad, of an identical or confusingly similar trademark to identify the same or similar goods or services, provided that such use started before the filing date in Mexico and has been continuous[1]. Claiming a date of first use in the application creates an exception to the rule.

The claim of the date of first use in the trademark application does not have consequences before the issuance of the trademark registration. Mexico does not demand use of the trademark to issue the registration and claiming a date of first use would not expedite the examination of the application.

After the issuance of the Mexican trademark registration, if the registrant claimed a date of first use in the application, the resulting registration would be enforceable against a third party using an identical or confusingly similar trademark in Mexico identifying the same or similar goods or services, even if such use started before the filing date in Mexico. Only if the use began before the date of first use stated in the application, then the trademark registration would not be enforceable against said third party.

As I said before, the rule is that a Mexican trademark registration may be invalidated due earlier and continuous use in Mexico or abroad if the use started before the filing date in Mexico. However, as an exception, if the registrant claimed a date of first use in Mexico in the application, then the plaintiff in the invalidation action would have to prove that it started the continuous use in Mexico or abroad before the date of first use stated in the application, instead of the filing date in our country.

Stating a date of first use has an important downside. The Mexican Industrial Property Statute stipulates that a trademark registration may be invalidated if it was issued using false information stated in the application. Although I am not aware of any statistics available, most of the invalidation actions I have filed on grounds of false information in the application, were related to the date of first use stated in the trademark application. The Mexican Patent and Trademark Office and the courts had consistently decided that the plaintiff did not have the burden of proof to demonstrate that the date of first use stated in the application was false; it was the trademark owner who had to demonstrate the truthfulness or accuracy of the date of first use. Considering that affidavits of use have almost no value as evidence in Mexico, proving that the applicant did not lie when stating a date of first use could be very difficult, especially in cases when the date of first use was several years old.

According to the statute of limitations, the vulnerability of a registered trademark against an invalidation action due false information stated in the application has to be filed within a five-year term after the publication of the trademark registration in the Official Gazette.

As you may imagine, stating a date of first use in a trademark application could become a dangerous trap and a potential risk of invalidation.

Some judges did some isolated efforts to moderate the rigor of the cause of invalidation provided in the statute. For example, there was an old isolated precedent from 1990 that provided that the invalidation on grounds of false information stated in the application, namely the date of first use, should only be declared if the plaintiff proves that the trademark owner obtained an unfair advantage from such a date of first use claim or that the first use claim could cause an unfair competition situation. However, other judges not only did not follow the precedent, but most of them affirmed the opposite position.

Things changed recently. On July 2016, a panel of judges issued a binding precedent about the invalidation action on grounds of false information stated in the application[2]. The precedent basically states that, in a cancellation action claiming that the date of first use stated in the trademark application was false, the burden of proof to demonstrate that the date of first use on a trademark application was false is on the plaintiff.

The precedent will dramatically reduce the chances of getting a trademark registration invalidated due a false or inaccurate date of first use; it seems extremely difficult to prove that someone was not using a trademark in the date it stated I the application. Therefore, the plaintiff has to prove that it was materially or legally impossible for the trademark owner to start using the trademark in the date stated in the application. Other than the above, the plaintiff may file evidence suggesting that a date of first sue is false, but not an actual direct proof.

The precedent was not free of controversy, because of the technicalities it implied. A significant number of judges in the panel disagreed, and one of them even prepared a very interesting minority report.

One question that remains to be solved is if this precedent may be applied to invalidation cases that started before the publication of the precedent. The Amparo Statute provides that binding precedents from the federal courts of appeals or the Supreme Court may not be retroactive. I think the provision prevents the federal courts of appeals and the Federal Court of Administrative Affairs from using the precedent to decide appeals filed after July 1, 2016. However, I believe the Mexican Patent and Trademark Office may start ruling cases using this new binding precedent, no matter when they were filed.

[1] It is not required to prove that the plaintiff’s trademark is well-known in Mexico; earlier and continuous use of the mark in any country is enough. The statue of limitations provides that such an invalidation action has to be filed within the third anniversary of publication of the issuance of the Mexican trademark registration in the Official Gazette.

Virtually all final decisions that the Mexican Patent and Trademark Office (MPTO) and the Mexican Copyright Office (MCO) issue may be challenged with the FCAA. Technically speaking, the challenge with the FCAA is not an appeal, but a trial, where the MPTO or the MCO are the defendants; these procedures are often referred to as “nullity trials”. However, I think “appeal” is a good analogy, so that is how I am going to call the procedures to challenge the final decisions of the MCO and MPTO.

The main purpose of the amendments to the Statute was shortening the time that an appeal takes to be decided. The press release issued after the enactment of the amendment explicitly stated that the FCAA expected a drop of up to 50% in the timing of deciding an appeal.

Basically, the amendment cut the terms to file and oppose appeals, to file final arguments and to cure flaws in the brief, among others. For example, the term to file and oppose the appeal was 45 business days; now, it is 30 business days. We used to have 15 business days to file the final arguments; the amended term is only 5 days.

The amended Statute also seeks to force judges to issue decisions faster.

The amendments are not applicable to appeals filed before June 14, 2016.

Oddly enough, the Statute, as amended, has a handful of technical inconsistencies, evidencing that Congress was not careful enough when preparing the amendment. However, I think the inconsistencies will not be an actual source of concern.

Although the terms cuts seem a good measure to reduce the time an appeal takes to be decided, I wonder if that was all Congress could do to make the appeal proceedings with the FCAA faster.

Further, in an appeal against the rejection or abandonment of a patent, copyright or trademark application, cutting the term to file the appeal implies reducing the opportunity of the applicant to adequately prepare the defense of its rights against a possibly illegal, even abusive, decision. In a time when the defense of humans rights at Mexican courts has taken an unprecedented push, making it harder to applicants to challenge the decisions of the MPTO and the MCO does not seem to harmonize with the pro personae tendency.

]]>https://reyesfenigeng.wordpress.com/2016/09/11/mexico-expedites-appeals/feed/0Arturo D. ReyesMexican Congress approves trademark opposition system.https://reyesfenigeng.wordpress.com/2016/05/01/new-trademark-opposition/
https://reyesfenigeng.wordpress.com/2016/05/01/new-trademark-opposition/#respondSun, 01 May 2016 13:06:07 +0000http://reyesfenigeng.wordpress.com/?p=507]]>For many years, Mexico was one of the few countries that did not have an opposition system, as such, for trademark applications. That is about to end very soon.

On April 28, 2016, the Chamber of Representatives informed that it passed a bill that will amend the Mexican Industrial Property Law and insert an opposition system for trademark applications. The bill was approved by the Senate a few months ago, so all it takes is the publication by the President, which should happen soon. The amendment will be effective 90 calendar days after the publication in the Official Journal of the Federation.

Update June 7, 2016: The amendments to the Industrial Property Law that introduced the opposition to trademark applications were published in the Official Journal of the Federation on June 1, 2016. The amendments and the opposition system will become effective on August 30, 2016.

The lack of an opposition system did not mean that trademark applications were not examined. The Mexican Patent and Trademark Office (MPTO) conducted the substantive examination ex-officio. If the examiner found obstacles, such as lack if distinctiveness, an identical or confusingly similar earlier registered or applied trademark covering the same or similar goods or services, or a well-known non-registered trademark, he issued an office action and allowed the applicant to answer and argue against the alleged lack of distinctiveness or similarities.

Further, if a third party believed that the approval of the trademark application could harm its rights, it could file an informal opposition. The informal opposition was a more or less short brief, calling the examiner’s attention to the existence of certain rights that could be harmed or infringed if the trademark application was approved. If the informal opposition was filed early in the examination proceeding, it had a good chance of being considered by the examiner and even cause the abandonment or final refusal of the opposed application.

The informal opposition was particularly effective to inform the examiner about the existence of a trademark application with a priority claim that predated the filing date of the examined application. It was not so effective when the ground of the opposition was earlier use in Mexico or abroad of an identical or confusingly similar trademark. If the MPTO approved an application for a trademark that was confusingly similar to another trademark used by a third party in Mexico or abroad to distinguish the same or similar goods or services, such third party could file an invalidation action, provided that it could prove that the use was earlier and continuous.

There has been an actual formal opposition (that has never been called like that) that takes place when a trademark application is subject of a final refusal because of the existence of an earlier registered or applied trademark in Mexico and the applicant files an appeal with the Federal Court of Tax and Administrative Affairs (FCTAA). In those cases, the court would serve a copy of the appeal to the owner of the anticipation, allowing it oppose the appeal by defending the legality of the final refusal, and even filing a final appeal (amparo) if the FCTAA’s decision were against the MPTO (see my earlier post Oppositions to trademark applications in Mexico).

Under the new opposition system, trademark applications will be published within ten business days after the filing date, regardless if formal requirements were meet. Third parties would have a one-month term to file an opposition.

The possible grounds for opposition will be broad, but limited to the substantive causes of non-registrability provided in sections 4 and 90 of the Mexican Industrial Property Law. For example, possible grounds of opposition would be descriptiveness of the trademark, illegal reproduction of the name or pseudonymous of an actual person, or the existence of an earlier identical or confusingly similar trademark registration or application in Mexico to identify the same or similar services.

On the other hand, earlier and continuous use (in Mexico or abroad) of an identical or confusingly similar trademark registration or application in Mexico to identify the same or similar services may not provide grounds for an opposition. Bad faith of the applicant because it was the licensee, representative, distributor or agent of a foreign trademark owner may not be a valid cause of opposition either. In these cases, the only available remedy has been and would be an invalidation action against the Mexican trademark registration.

There will be a government fee for opposing a trademark application. I do not know how much it will cost, but the reason behind the government fee is discouraging frivolous oppositions, thus I would expect it to be around US$150.00.

Oppositions would be published, and the applicant will have one month to answer the opposition and file arguments and evidence to support the application.

The Mexican opposition system intends to be simple and avoid becoming a burdensome time-consuming proceeding, as it happens in some South American countries. The opposition will be more a source of information for the examiner than a contentious proceeding (somehow similar to the ‘Letter of Protest’ in the United States) .

After the MPTO decides issuing the trademark registration or the final refusal of the application, the opposing party will receive a written communication informing about the success of the opposition or the approval of the trademark application. If the opposition were not successful, the opposing part may file an invalidation action.

Would the new opposition system significantly change the state of things in Mexico? I don’t think so.

In my opinion, the new opposition system provides rules and terms to an existing practice, without actually changing it. Trademark applications will continue being examined in the same way they used to. Further, the opposition and the result would not prejudice about third party’s rights or the intrinsic legality of the trademark registration, and the causes of invalidation will be available regardless if there was as opposition.

The lawmakers that supported the bill stated that the adoption of the Madrid Protocol encouraged the creation of the opposition system (I do not see the connection). According to the lawmakers, the opposition will help to reduce the number of invalidation actions, improve the quality of trademark examinations and provide right-holders –especially owners of earlier Mexican trademark registrations and applications- with a very cost-effective tool to protect their rights.

]]>https://reyesfenigeng.wordpress.com/2016/05/01/new-trademark-opposition/feed/0Arturo D. ReyesThe Drug Lord and the Trademarkhttps://reyesfenigeng.wordpress.com/2016/02/01/drug-lord-trademark/
https://reyesfenigeng.wordpress.com/2016/02/01/drug-lord-trademark/#respondMon, 01 Feb 2016 23:33:37 +0000http://reyesfenigeng.wordpress.com/?p=493]]>The recent detention of the notorious criminal Joaquín Guzmán Loera, also known as “el Chapo”[1] Guzmán has called the attention of all Mexican media. The whole case is surrounded by hard to believe facts, some of them even surrealistic: the evasion from one of Mexico’s top security jails using a mile long tunnel, Sean Penn’s so called interview at one of the drugs kingpin’s hideouts when he was still in the run, the bizarre relation of Guzmán with the soap opera’s actress Kate del Castillo and the possible extradition of the criminal to the USA are just a few of the topics around this event.

One of the topics around Joaquín “Chapo” Guzmán that has deserved a place in the recent news relates to trademarks. The press informed that there were attempts to register different versions of the name and nickname of Joaquín Guzmán Loera as a trademark. The applicants were Alejandrina Gisselle Guzmán Salazar (marks “JOAQUÍN EL CHAPO GUZMÁN” and “EL CHAPO GUZMÁN”), Emma Coronel Aispuro (mark “JOAQUÍN ARCHIVALDO GUZMÁN LOERA EL CHAPO GUZMÁN”) and María Alejandrina Salazar Hernández (marks “EL CHAPITO” y “EL CHAPITO GUZMÁN”).

María Alejandrina Salazar Hernández (María Salazar) was the Drug Lord’s first wife[2], Emma Coronel Aispuro (Emma Coronel) is the current wife of Guzmán[3] and some say that Alejandrina Gisselle Guzmán (Alejandrina Guzmán) is the daughter of Guzmán Loera[4].

I do not know if any of the applicants were following Guzman’s instructions, but it is important to highlight that no application was filed by Joaquín Guzmán Loera or on his behalf, as some media has incorrectly stated.

Alejandrina Guzmán’s trademark applications for “EL CHAPO GUZMÁN” covered products of International Classes 14 (jewelry and watches)[6], 18 (articles made of fur, leather and leather imitation), 25 (clothing, footwear and headgear), 28 (toys and sports articles) and services of International Class 35 (advertising and business direction). The applications for “EL CHAPO” referred to goods and services of International Classes 14, 18, 28 and 35. The applications for “JOAQUÍN EL CHAPO GUZMÁN” were filed in International Classes 14, 18 and 25.

María Salazar filed applications for “EL CHAPITO” and “EL CHAPITO GUZMÁN” in International Classes 14, 18, 25 and 35. She also filed an application for “DON CHAPO GUZMÁN” in International Class 33 to identify alcoholic beverages except beer.

On August 2011, the “Instituto Mexicano de la Propiedad Industrial” or Mexican Patent and Trademark Office (MPTO) issued the final refusal to all trademark applications that María Salazar filed (“EL CHAPITO”, “EL CHAPITO GUZMÁN” and “DON CHAPO GUZMÁN”).

As for the filings of Alejandrina Guzmán, the MPTO approved the four applications for “EL CHAPO” (trademark registrations 1205096, 1205097, 120509 y 1219281) and rejected the applications for “JOAQUÍN EL CHAPO GUZMÁN”.

The decisions regarding the rejections of the trademark applications for “EL CHAPITO GUZMÁN”, “DON CHAPO GUZMÁN”, “JOAQUÍN EL CHAPO GUZMÁN” and “EL CHAPO GUZMÁN” basically state that the aforementioned marks are expressions used to identify an individual that, back then, was wanted by federal authorities in connection with several felonies, thus they were against morale and good uses and non-registrable, as provided by section 4 of the Industrial Property Law[7].

On April 2015, the MPTO objected the trademark applications stating, on one hand, that the law prohibits registering the names or aliases of actual people without authorization; on the other hand, the examiner stated that the name of an individual that was being prosecuted could not be registered as a trademark because it was against moral and good uses. Emma Coronel did not answer the office actions and the applications became abandoned.

I do not want to discuss here what are good uses and what is moral or immoral. Some conducts that may be immoral or unbearable for some people are completely justifiable for others. Even in the case of individuals that the State itself may consider as enemies, the conflict may have many different reasons and there can be disagreement about the morality of their actions, even inside the same community. Nevertheless, I think the decisions of the MPTO to reject the trademark applications for the name and pseudonyms of the leader of one of the largest criminal organizations in Mexico were reasonable. The trademark system is no intended to protect the name of a felon that is responsible, directly or indirectly, for the suffering, torture and death of thousands in Mexico, including several actual journalists.

Then, why the MPTO issued to Alejandrina Guzmán trademark registrations for “EL CHAPO” in four different classes of goods and services and at the same time rejected the trademark applications for “EL CHAPITO” filed by María Salazar?

As I stated before, in some regions of Mexico the word “chapo” is used to designate short people, without making any reference to illegal activities. I remember the skillful Mexican midfielder Luis Montes (currently playing for Leon in the Mexican First Division), who is called “Chapo” or “Chapito”, and his nickname has never been linked or construed as an evocation to Joaquin Guzmán Loera.

If “chapo” is a nickname without negative connotations widely used in Mexico, my guess is that the examiner thought he did not have solid grounds to state that “chapo” is a word intrinsically immoral or against good uses, so his only option was approving the registration of “EL CHAPO” filed by Guzmán Salazar.

Further, there are several trademark registrations owned by other people that involve the mark “EL CHAPO” to distinguish different goods and services.

The MPTO issued several registrations for “EL CHAPO DE SINALOA” (translated as “The Chapo from Sinaloa”) in the name of Ernesto Pérez Zagaste. Apparently, Mr. Pérez is a singer of one kind of Mexican folk music called “banda” that uses “EL CHAPO DE SINALOA” as artistic name.

Mr. Pérez claims in his website that he was born at the county of Badiraguato, in the Mexican state of Sinaloa; the Drug Lord Joaquin “Chapo” Guzmán is also from Badiraguato, Sinaloa.

Another individual, María de los Ángeles Moreno Rodríguez registered the trademark “EL CHAPO” to identify clothing, shoeware and headgear (trademark registration number 948,388) since August 2006. Ms. Rodriguez filed a trademark application (serial 796,602) on July 2006 for the mark “LOS ZETAS” also in Class 25. “Los Zetas” is the name of one of the most violent criminal organizations in Mexico. The examiner objected the application for “LOS ZETAS” on grounds of the statutory prohibition provided in section 4 of the Industrial Property Law, the applicant did not answer and the application became abandoned.

The MPTO did not refuse the applications for “EL CHAPITO” that Ms. Maria Salazar filed, on grounds of defense of morality or good uses. The reason was that “EL CHAPITO” was confusingly similar the earlier filed trademark “EL CHAPO” by Alejandrina Guzmán to cover the same products and services in Classes 14, 18, 28 and 35 and confusingly similar to the senior trademark registration of Ms. Moreno “EL CHAPO” in Class 25.

I do not know why María Salazar filed for “EL CHAPITO” and Alejandrina Guzmán for “EL CHAPO”, but the fact was that Alejandrina Guzman filed first (just for a few minutes, but first), thus her applications anticipated the trademark applications for “EL CHAPITO” and were the cause of the rejections. If the applications for “EL CHAPITO” and “EL CHAPO” would have been filed in the name of the same person, the chances of obtaining the registrations for “EL CHAPITO” would have been better, at least in Classes 14, 18, 28 and 35.

Meanwhile, a collateral victim of all the noise around the trademarks of “El Chapo” could be Luis “el Chapo” Montes who, in order to avoid misunderstandings or inconvenient associations, could ask the fans and the press to stop using the nickname “Chapo” or “Chapito” when speaking or writing about him. Would he like to be called Luis “Shorty” Montes?

[1] One of the most important and authoritative dictionaries in the Spanish-speaking world is the one that the Real Academia Española (based in Spain) publishes. The dictionary of the Real Academia defines “chapo” as “substantive male and female, colloquial in Mexico. Person of short height”. The original entry is: chapo, pa 1. m. y f. coloq. Méx. Persona de baja estatura. Real Academia Española [Online edition] http://dle.rae.es/?id=8azLK4e. Date of review: January 14, 2016.

[5] It is likely that María Salazar and Alejandrina Guzmán were coordinated. They filed the applications on the same date just a few minutes apart and hired the same attorney.

[6] The goods and services listed in this article are just examples of the products and services described in the applications, not the actual descriptions.

[7] Section 4 of the Industrial Property Law states as follows: Section 4.- No patent, registration or authorization shall be issued, and no action or right shall be published in the Official Gazette, when their content or form are against public order, morale or good uses or any legal provision.

]]>https://reyesfenigeng.wordpress.com/2016/02/01/drug-lord-trademark/feed/0Arturo D. ReyesSome problems that Madrid users may face in Mexicohttps://reyesfenigeng.wordpress.com/2015/12/17/problems-madrid-users/
https://reyesfenigeng.wordpress.com/2015/12/17/problems-madrid-users/#respondThu, 17 Dec 2015 14:26:21 +0000http://reyesfenigeng.wordpress.com/?p=461]]>On November 19, 2012, Mexico’s Secretary of Economy deposited the country’s accession document to the Madrid Protocol for International Registration of Marks. Mexico started accepting International Registrations three months later.

Almost three years have passed since the implementation of the Madrid Protocol in Mexico, and I can now explain some of, in my opinion, the most usual problems for Madrid applicants when filing in Mexico.

Translations of goods and services.

It seems silly, but mistranslations seem to be the most common issue with Madrid Registrations in Mexico. Needless to say, a mistranslation can be a serious problem.

I do not know how the World Intellectual Property Organization (WIPO) translates the descriptions of goods and services (i.e. if it uses software without human intervention), but the fact is that errors in translations are not uncommon, and they may cause an objection from the Mexican examiner because the translated word does not make sense in the context of the application or because it creates a conflict with the Class stated in the application. Then, the applicant has to retain a Mexican attorney to explain the Mexican Patent and Trademark Office (MPTO) that there was a translation error by WIPO and provide the examiner with the correct description in Spanish.

The intervention of the local counsel requires filing an original power of attorney from the applicant, so answering an office action demands more paperwork that just preparing a response.

In the worst-case scenario, an error in the translation may go undetected by the Mexican examiners, causing that the trademark rights granted in Mexico do not include the product or service the applicant actually wanted to be covered by the trademark and was incorrectly translated into Spanish. Of course, errors in translations are not exclusive of International Registrations; they may also happen with regular trademark applications, but the local counsel would be supposed to be more cautious.

Mexico is one of the countries that allow the use of the Class headers to describe the goods or services covered by a trademark application, although there is no actual “full-class” coverage.

However, some expressions used in many jurisdictions, such as “accessories and parts thereof” may be objected by the Mexican examiners, due lack of specificity. Actually, this is a problem for all trademark applicants, not for Madrid users only. The applicant has to delete “accessories and parts thereof” or provide a list of all the “accessories and parts thereof” covered by the registration in the same Class.

Multiple-Class Applications.

Mexico does not allow multiple-Class applications, but the Madrid System allows multiple-Class International Registrations.

In order to deal with this inconsistency, the MPTO “divides” multiple-Class International Registrations in as many applications as International Classes are involved, and examines each of this “applications” independently. When the MPTO approves the protection in certain Class, it issues a local trademark registration for that Class. A local trademark registration is also issued in case of single-Class International Registrations.

Sometimes the examiner disagrees about the classification of the goods and services listed in the International Registration. If the International Registration is multiple-Class, the examiner may simply “move” the relevant goods or services to the “correct” Class, if the Registration includes such “correct” Class. If not, the examiner will request the applicant to delete the goods or services that do not belong in the Class stated in the Registration.

The applicant has a two-month term to answer the office action, with a two-month automatic extension.

One big inconvenient for applicant of the MPTO’s practice of dividing mutiple-Class International Registrations in as many local applications as Classes are involved, is related with the appeal against a final total refusal. Instead one overall refusal, the MPTO will issue one refusal per Class and the applicant would have to file one appeal per refusal, multiplying the number of appeals and increasing the costs.

Substantive Examination

The substantive examination of International Registrations is basically the same than with regular trademark applications. However, examiners may check the decisions of other Trademark Offices, looking for absolute grounds of rejection that may not be evident for the Mexican authorities.

The applicant has a two-month term to answer a provisional rejection related to the substantive examination, with a two-month automatic extension.

Invalidation and Cancellation Actions.

This is still a theoretical risk, because I have not seen such a case yet, but we will have to deal with it sooner or later.

When a cancellation or invalidation action is filed against a Mexican trademark registration owned by a non-resident, the MPTO will serve summons through the local attorney of record that filed the trademark application, the last renewal or the last assignment.

However, Madrid Registrations do not have a local attorney of record, so it is no clear how these trademark owners will be summoned in case a third party files a cancellation or invalidation action. It is possible that the service of summons will be carried out through a special publication in the Official Journal of the Federation and/or the Official Gazette.

Summons served through publications in the Official Journal of the Federation are expensive and no easy to detect, especially for a foreign trademark owner. In that case, the invalidation or cancellation action may be served and decided without the actual knowledge of the registrant. By the time the owner of the International Registration finds that the protection in Mexico has been invalidated or cancelled, it could be too late to appeal or file some other legal remedy.

One way to prevent such an unfavorable scenario is appointing an attorney of record in all International Registrations and in each Class (remember, the MPTO will issue one trademark registration per Class) valid in Mexico. Of course it will cost money, but the trademark owner will have the certainty that, if someone challenges the validity of the trademark registration, a copy of the invalidation or cancellation action will be served to local attorney instead of being served through some hard to detect publication.

Hopefully, the more familiar the Madrid Protocol becomes for Mexican authorities and attorneys, better tools and remedies will be developed to make the system more efficient and reduce unfair situations as the one described above.

]]>https://reyesfenigeng.wordpress.com/2015/12/17/problems-madrid-users/feed/0Arturo D. ReyesThe different terms of Copyright in Mexicohttps://reyesfenigeng.wordpress.com/2014/04/17/copyright-terms/
https://reyesfenigeng.wordpress.com/2014/04/17/copyright-terms/#respondThu, 17 Apr 2014 17:32:39 +0000http://reyesfenigeng.wordpress.com/?p=449]]>On July 23, 2003, the Federal Congress amended the Mexican Federal Copyright Law. Among other changes, the Congress extended the term of the economic rights on works from the life of the author plus 75 years to the life of the author plus 100 years, counted from the date of death of the author.

Since 1997, the Mexican statute makes a distinction between personal rights and economic rights. Personal rights include the right to decide if a work should be disclosed or not, the right to modify the work, the right to oppose the mutilation of the work, and the right to be acknowledged as author, among other rights. As a rule, personal rights have no monetary value and may not be assigned by contract.

Economic rights include the right to copy the work, distribute copies, communicate the work, authorize the public use of derivative works (such as translations and adaptations), among others, and may be assigned and licensed.

As a consequence of the 2003 amendment to the Federal Copyright Law, many lawyers and associations of authors claim that the economic rights on works of authors that died 50, 75 or 90 years ago are still in force, hence the holders of such economic rights are entitled to claim royalties for the use, public communication or reproduction of the works.

However, a thorough review of the different provisions and past legislations regarding copyright may lead to a different conclusion.

The Federal Copyright Law of 1947[1] provided that the term of copyright was the life of the author plus 20 years. A new copyright statute enacted in 1956 extended the life of copyright to the life of the author plus 25 years.

The Federal Copyright Law of 1956[2] expressly stated that the copyright term of works of authors that died before the enactment of the new law would be automatically extended to the term provided in the 1956 statute. In other words, the Federal Copyright Law of 1956 provided the retroactive application of the new extended term of copyright.

The 1956 law was amended in 1963; the 1963 amendments were so deep and extensive that it is usual to speak about the Federal Copyright Law of 1963[3], as if it were a new statute. The Federal Copyright Law of 1963 extended the term of copyright to the life of the author plus 30 years after his death. However, unlike the 1956 statute, the transitory articles of the 1963 law did not provide that the new term could be retroactively applied.

An amendment in 1982[4] to the Federal Copyright Law of 1963 stipulated a new extension for the term of the copyright: the life of the author plus 50 years. Again, the transitory articles of the amendment did not provide that the extended term would be retroactive.

Constitutional article 14 prohibits the retroactive enforcement of a law or regulation, only if it harms an acquired right. However, in my opinion, as a rule, in order to retroactively enforce a new law or amendment, it is necessary for the new or amendment law to expressly provide such retroactive effect[5]. The only exception would be new laws or provisions that stipulate criminal or administrative penalties, if the new stipulation or law states a benefit or less severe penalty; in this case the new stipulation or law would be enforced automatically, without explicitly stating the retroactive enforcement of the new law of provision[6].

Without a provision allowing the retroactive enforcement of the extended terms of copyright stipulated in the Federal Copyright Law of 1963 and its amendment of 1982, it is quite arguable to state that the original copyright term stipulated in the Copyright Law of 1956, was extended by the Federal Copyright Law of 1963 or its amendment of 1982. If the terms stated in the Law of 1963 and its amendment of 1982 cannot be enforced in connection with authors that died when the Law of 1956 was still in force, the copyright on the works of an author that passed away, i.e. on October 31, 1963, were extinguished by October 31, 1988, (25 years after the date of death).

In the same way, the term of copyright of authors that died when the Copyright Law of 1963 was in force, but before the amendment of 1982, did not get the benefit of the new extended term. The exclusivity rights on the works of an author deceased in 1966 would be extinguished by 1996.

The Federal Copyright Law currently in force was enacted on December 24, 1996[7], and became enforceable on March 24, 1997. As I stated at the beginning of this post, the 1997 Federal Copyright Law was the first statute to provide an explicit distinction between personal and economic rights in the field of copyright[8]. Originally, the Federal Copyright Law of 1996 stated a term of 75 years, counted from the date of death of the author, for economic rights. As in 1963 and 1982, the Federal Copyright Law of 1996 did not stipulate that the new extended term of the economic rights on a work could be retroactively enforced; the 2003 amendment to the Federal Copyright Law (enacted on July 23, 2003, and enforceable on July 24, 2003)[9] that extended the term of economic rights to a 100 years, counted from the death of the author, did not state retroactivity either.

Therefore, in opinion, the extended terms for economic rights provided in 1996 and 2003 may not be extended to works by authors that died before the new terms became enforceable.

About a year ago, AIPPI submitted Question 235 or Q235 about the term of copyright protection in Mexico. Unfortunately, the answer to the question from the Mexican chapter did not analyze the issues regarding the retroactive enforcement of the extended terms of copyright protection in Mexico.

In conclusion, there are four possible scenarios regarding the term of copyright economic rights in Mexico, depending on the statute or amended statute that was enforceable by the time the author of the work died:

A. In the case of the works of authors that died by or before January 11, 1982, the term of the copyright economic rights expired on January 11, 2012. These works are in public domain now.

B. In the case of the works authors that died between January 12, 1982 and March 23, 1997, the term of the copyright economic rights will expire 50 years after the date of death.

C. In the case of the works of authors that died between March 24, 1997 and July 23, 2003, the term of the copyright economic rights will expire 75 years after the date of death.

D. In the case of the works of authors that passed away on or after July 24, 2003, the economic rights will expire 100 years after the date of death.

[9] The text of the 2003 amendment to the Federal Copyright Law of 1996 (in Spanish) is available here.

]]>https://reyesfenigeng.wordpress.com/2014/04/17/copyright-terms/feed/0Arturo D. ReyesThe Mexican Supreme Court sets limits to the filing of new evidence in appeals.https://reyesfenigeng.wordpress.com/2013/11/30/new-evidence-in-appeals/
https://reyesfenigeng.wordpress.com/2013/11/30/new-evidence-in-appeals/#respondSun, 01 Dec 2013 04:49:55 +0000http://reyesfenigeng.wordpress.com/?p=440]]>A typical cancellation, invalidation or infringement action regarding trademarks or patents in Mexico involve three different stages: the cancellation, invalidation or infringement action with the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO), a juicio contencioso administrativo or appeal with the Federal Court of Tax and Administrative Affairs (FCTAA) and an amparo directo or final appeal with a Federal Court of Appeals.

Under some extraordinary circumstances, it is possible to file an appeal against a decision of the MPTO with a Federal District Judge, but this not the rule and the appeal I will refer to in this article is the appeal with the FCTAA.

One of the rules of the appeals with the FCTAA has been that the appellant and the appellee may file new arguments and evidence that were not previously filed with the MPTO; we call this rule litis abierta.

The filing of new arguments and/or evidence in the appeal has caused the FCTAA to revoke some decisions issued by the MPTO, fully legal and consistent to what the parties argued and proved. Nevertheless, not all courts of appeals agree on how the litis abierta rule should be applied. The Fourth Court of Appeals in Mexico City was against the filing of new evidence of use in appeals associated to cancellation actions against registered trademarks due non-use.

A new binding precedent from the Supreme Court (73/2013)[1], published in July 2013, has set some limits to the possibility of filing new evidence in appeals, although the language the court used in drafting this precedent is ambiguous. Although the precedent does not affect the right to file new arguments in the appeal with the FCTAA, the court stated that it would not be valid to declare the invalidation of a decision based on the analysis of evidence that the appellant did not file in the original procedure in spite of having the obligation and being capable to legally do so.

The precedent was issued to solve contradictory rulings between courts of appeals. Although origin of the contradictory decisions and the precedent itself were associated to tax cases, it construes a statutory provision that applies to all appeals filed with the FCTAA, thus it will impact IP cases.

In my opinion, the language the court uses in the precedent is a little ambiguous and it raises some questions. I am concerned about the obligation of filing evidence. Under Mexican law, filing evidence is a burden, but not an obligation. Actually, some lawyers believe that proving is a right. So what did the court mean about having the obligation of filing evidence?

I think that filing evidence becomes an obligation when the government agency, i.e. the MPTO, issues a specific order requesting one of the parties to exhibit certain document in the procedure. If the MPTO issue an order requesting a specific document, then there was an obligation to file it. If the party that received the order to file the document did not do it, according to this binding precedent, it can’t file it later as evidence in the appeal. Further, any document that was not subject matter of an order from the MPTO to be filed in the invalidation/cancellation/infringement proceeding, may be filed as new evidence in the appeal, because there was no obligation to file it in the previous procedure.

However, I think the courts of appeals will construe the precedent 73/2013 in a broader way. While continuing accepting the filing of new arguments, I think the courts of appeals will decide against the filing of all new evidence in the appeal. As an example, the Tenth Court of Appeals in Mexico City construed the precedent 73/2013 in such a broad way when deciding the final appeal (amparo directo) DA 552/2013.

The litis abierta rule applicable to appeals with the FCTAA will probably continue evolving, and I hope the courts of appeals and the Supreme Court itself will publish new precedents clarifying and narrowing the broad construction of this relatively new precedent.